Key Points of Judgment

1. Personal name rights are personality rights of a natural person in his or her personal name, and may constitute the prior rights under the Trademark Law. Where the Chinese translation of the personal name of a foreign natural person meets the prescribed conditions, the foreign natural person may claim protection of the Chinese translation as a specific name in accordance with the relevant provisions on personal name rights.

2. Where a foreign natural person claims personal name rights protection in respect of a specific name, the specific name should meet the following three conditions: (a) the specific name has a certain level of popularity in China and is known to the relevant public; (b) the relevant public uses the specific name to refer to the natural person; and (c) a stable correlation has been established between the natural person and the specific name.

3. “Use” is one of the components of the personal name rights of a natural person, but is not a legal prerequisite for the natural person to claim protection of his or her personal name rights. A specific name is protected by law based on personal name rights, and even if a natural person does not proactively use it, it does not affect his or her claim in accordance with the provisions of the Trademark Law on prior rights.

4. Where a “trademark holder” that, in violation of the principle of good faith, maliciously applied for trademark registration to infringe upon the existing prior rights of others claims that the registered trademark is legal and valid on the grounds that its promotion and use of, winning of awards for, and protection of the trademark and other efforts have formed a “market order” or “commercial success,” the people's court should not uphold such claim.

Legal Provisions

1. Article 32 of the Trademark Law of the People's Republic of China (2013 Amendment) (Article 31 of the Trademark Law of the People's Republic of China (2001 Amendment) as applied in this case)

2. Article 4 and paragraph 1 of Article 99 of the General Principles of the Civil Law of the People's Republic of China

3. Articles 7 and 110 of the General Provisions of the Civil Law of the People's Republic of China

4. Paragraph 2 of Article 2 of the Tort Law of the People's Republic of China

Basic Facts

The trademark administrative dispute case of Michael Jeffrey Jordan (retrial petitioner, hereinafter referred to as “Michael Jordan”) v. Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (respondent, hereinafter referred to as the “TRAB”) and Qiaodan Sports Co., Ltd. (a third party in the original trial, hereinafter referred to as “Qiaodan Company”) involved the trademark of “乔丹” (No. 6020569) of Qiaodan Company, as approved for use on sports equipment, swimming pools (for recreation), roller skates, and Christmas tree decorations (excluding lighting and sweets) under class 28 of the International Classification of Goods and Services for the Purposes of the Registration of Marks (hereinafter referred to as the “Nice Classification”). The retrial petitioner alleged that the trademark contained the Chinese translation, “乔丹,” of his English personal name, which infringed upon the existing prior rights of others under Article 31 of the Trademark Law of the People's Republic of China (2001 Amendment) (hereinafter referred to as the “Trademark Law”), and therefore, requested the TRAB to revoke the disputed trademark.

The TRAB held that the trademark “乔丹” was different from “Michael Jordan” and its Chinese translation, “迈克尔·乔丹,” and because “Jordan” was a common surname in Britain and the United States, it was difficult to determine a sure correspondence between this surname and Michael Jordan. The TRAB ruled to maintain the trademark in dispute. The retrial petitioner then filed an administrative lawsuit against the TRAB's ruling with the First Intermediate People's Court of Beijing Municipality.

Judgment

On April 1, 2015, the First Intermediate People's Court of Beijing Municipality entered an administrative judgment (No. 9163 [2014], Original, Administrative Division, Intellectual Property, First IPC, Beijing) to dismiss the claims of Michael Jordan. Michael Jordan appealed against the judgment of the court of first instance. On August 17, 2015, the Higher People's Court of Beijing Municipality entered an administrative judgment (No. 1915 [2015], Final, Administrative Division, Intellectual Property, HPC, Beijing) to dismiss Michael Jordan's appeal and uphold the original judgment. Michael Jordan then filed a retrial petition with the Supreme People's Court. After reviewing the case, the Supreme People's Court entered an administrative judgment (No. 27 [2016], Retrial, Administrative Division, SPC) on December 7, 2016, as follows: (a) the administrative judgment (No. 9163 [2014], Original, Administrative Division, Intellectual Property, First IPC, Beijing) of the First Intermediate People's Court of Beijing Municipality should be revoked; (b) the administrative judgment (No. 1915 [2015], Final, Administrative Division, Intellectual Property, HPC, Beijing) of the Higher People's Court of Beijing Municipality should be revoked; (c) the TRAB's ruling on the disputed trademark “乔丹” (No. 6020569) (No. 052058 [2014], Trademark Review and Adjudication, TRAB) should be revoked; and (d) the TRAB should enter a new ruling on the trademark “乔丹” (No. 6020569).

Guiding Case No. 113 of the Supreme People's Court: Michael Jeffrey Jordan v. Trademark Review and Adjudication Board of the State Administration for Industry and Commerce and Qiaodan Sports Co., Ltd. (Administrative dispute over a trademark)>